Section 30 of the Trademark Act, 15 U.S.C. §1112, provides authority for establishing a classification system. That section states, in part, as follows:
The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant's or registrant's rights.
As of September 1, 1973, the international classification of goods and services is the primary classification used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes. See 37 C.F.R. §2.85. Unless otherwise indicated, references in this manual to class refer to the international class.
Prior to September 1, 1973, the United States used its own classification of goods and services, which is different from the international classification. The prior United States classification continues to govern for all statutory purposes for trademark applications filed on or before August 31, 1973, and all registrations issued on the basis of an application filed on or before August 31, 1973.
If a registration issued under the U.S. classification system, the registrant may voluntarily amend to reclassify under the international classification system, if registrant pays the $100.00 filing fee required by 37 C.F.R. §2.6 for Section 7 amendments. See
TMEP §1609.04.
Classification schedules are set forth in Part 6 of the Trademark Rules of Practice. The international classification schedule for goods and services is found in 37 C.F.R. §6.1, and the prior United States classification schedule for goods and services is found in 37 C.F.R. §6.2. The United States schedule for certification marks is found in 37 C.F.R. §6.3 and the United States schedule for collective membership marks is found in 37 C.F.R. §6.4.
International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and are promulgated in the volume entitled International Classification of Goods and Services for the Purposes of the Registration of Marks (8th ed. 2002), published by the World Intellectual Property Organization ("WIPO"). For additional information relating to this publication, see
TMEP §1401.02(c).
The general remarks, class numbers, class headings, and explanatory notes for each international trademark class are as follows. (The word or words in parentheses following the class numbers are short titles for the classes that are used exclusively in the United States Patent and Trademark Office ("USPTO") and are not part of the official text of the Nice Union classes. See
TMEP §1401.02(b).)
GENERAL REMARKS
The indications of goods or services appearing in the List of Classes are general indications relating to the field to which, in principle, the goods or services belong. The Alphabetical List should therefore be consulted in order to make sure of the classification of each specific product or service.
Goods
(1) If a product cannot be classified in accordance with the List of Classes or with the Alphabetical List, the following remarks indicate the criteria to be applied:
(a) Finished products are classified, in principle, according to their function or purpose; if that criterion is not provided for in the List of Classes, finished products are classified by analogy with other comparable finished products contained in the Alphabetical List. If none is found, other subsidiary criteria such as that of the material of which the goods are made or the mode of operation are applied.
(b) Finished products which are multipurpose composite objects (e.g., clocks incorporating radios) may be classified in all the classes that correspond to each of their functions or intended purposes. If those criteria are not provided in the List of Classes, then other criteria indicated under (a) are to be applied.
(c) Raw materials, unworked or semi-worked, are classified, in principle, according to the material of which they consist.
(d) Goods intended to form part of another product are, in principle, classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, criterion (a) applies.
(e) Where goods, whether finished or not, are classified according to the material of which they are made and where they are made of different materials, such goods are in principle classified according to the material which predominates.
(f) Cases adapted to the product they are intended to contain are classified, in principle, in the same class as the product.
Services
(1) If a service cannot be classified in accordance with the Alphabetical List, the following remarks indicate the criteria to be applied:
(a) Services are classified, in principle, according to the branches of activity specified in the headings of the service classes and their Explanatory Notes or, subsidiarily, by analogy with other comparable services contained in the Alphabetical List.
(b) Rental services are classified, in principle, in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, Cl. 38).
(c) Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
GOODS
CLASS 1
(Chemicals)
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Explanatory Note
This class includes mainly chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes.
Includes, in particular:
• compost;
• salt for preserving other than for foodstuffs.
Does not include, in particular:
• raw natural resins (Cl. 02);
• chemical products for use in medical science (Cl. 05);
• fungicides, herbicides and preparations for destroying vermin (Cl. 05);
• adhesives for stationery or household purposes (Cl. 16);
• salt for preserving foodstuffs (Cl. 30);
• straw mulch (Cl. 31).
CLASS 2
(Paints)
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Explanatory Note
This class includes mainly paints, colourants and preparations used for the protection against corrosion.
Includes, in particular:
• paints, varnishes and lacquers for industry, handicrafts and arts;
• dyestuffs for clothing;
• colourants for foodstuffs and beverages.
Does not include, in particular:
• unprocessed artificial resins (Cl. 01);
• laundry blueing (Cl. 03);
• cosmetic dyes (Cl. 03);
• paint boxes (articles for use in school) (Cl. 16);
• insulating paints and varnishes (Cl. 17).
CLASS 3
(Cosmetics and cleaning preparations)
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Explanatory Note
This class includes mainly cleaning preparations and toilet preparations.
Includes, in particular:
• deodorants for personal use;
• sanitary preparations being toiletries.
Does not include, in particular:
• chemical chimney cleaners (Cl. 01);
• degreasing preparations for use in manufacturing processes (Cl. 01);
• deodorants other than for personal use (Cl. 05);
• sharpening stones and grindstones (handtools) (Cl. 08).
CLASS 4
(Lubricants and fuels)
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Explanatory Note
This class includes mainly industrial oils and greases, fuels and illuminants.
Does not include, in particular:
• certain special industrial oils and greases (consult the Alphabetical List of Goods).
CLASS 5
(Pharmaceuticals)
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Explanatory Note
This class includes mainly pharmaceuticals and other preparations for medical purposes.
Includes, in particular:
• sanitary preparations for personal hygiene, other than toiletries;
• deodorants other than for personal use;
• cigarettes without tobacco, for medical purposes.
Does not include, in particular:
• sanitary preparations being toiletries (Cl. 03);
• deodorants for personal use (Cl. 03);
• supportive bandages (Cl. 10).
CLASS 6
(Metal goods)
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Explanatory Note
This class includes mainly unwrought and partly wrought common metals as well as simple products made of them.
Does not include, in particular:
• bauxite (Cl. 01);
• mercury, antimony, alkaline and alkaline-earth metals (Cl. 01);
• metals in foil and powder form for painters, decorators, printers and artists (Cl. 02).
CLASS 7
(Machinery)
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Explanatory Note
This class includes mainly machines, machine tools, motors and engines.
Includes, in particular:
• parts of motors and engines (of all kinds);
• electric cleaning machines and apparatus.
Does not include, in particular:
• certain special machines and machine tools (consult the Alphabetical List of Goods);
• hand tools and implements, hand operated (Cl. 08);
• motors and engines for land vehicles (Cl. 12).
CLASS 8
(Hand tools)
Hand tools and implements (hand operated); cutlery; side arms; razors.
Explanatory Note
This class includes mainly hand operated implements used as tools in the respective professions.
Includes, in particular:
• cutlery of precious metals;
• electric razors and clippers (hand instruments).
Does not include, in particular:
• certain special instruments (consult the Alphabetical List of Goods);
• machine tools and implements driven by a motor (Cl. 07);
• surgical cutlery (Cl. 10);
• paperknives (Cl. 16);
• fencing weapons (Cl. 28).
CLASS 9
(Electrical and scientific apparatus)
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Explanatory Note
Includes, in particular:
• apparatus and instruments for scientific research in laboratories;
• apparatus and instruments for controlling ships, such as apparatus and instruments, for measuring and for transmitting orders;
• the following electrical apparatus and instruments:
(a) certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8;
(b) apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles;
• protractors;
• punched card office machines;
• amusement apparatus adapted for use with television receivers only;
• all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.
Does not include, in particular:
• the following electrical apparatus and instruments:
(a) electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit-presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;
(b) electric razors and clippers (hand instruments) (Cl. 08);
(c) electric toothbrushes and combs (Cl. 21);
(d) electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);
• clocks and watches and other chronometric instruments (Cl. 14);
• control clocks (Cl. 14).
CLASS 10
(Medical apparatus)
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Explanatory Note
This class includes mainly medical apparatus, instruments and articles.
Includes, in particular:
• special furniture for medical use;
• hygienic rubber articles (consult the Alphabetical List of Goods);
• supportive bandages.
CLASS 11
(Environmental control apparatus)
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Explanatory Note
Includes, in particular:
• air conditioning apparatus;
• bedwarmers, hot water bottles, warming pans, electric or nonelectric;
• electrically heated cushions (pads) and blankets, not for medical purposes;
• electric kettles;
• electric cooking utensils.
Does not include, in particular:
• steam producing apparatus (parts of machines) (Cl. 07);
• electrically heated clothing (Cl. 09).
CLASS 12
(Vehicles)
Vehicles; apparatus for locomotion by land, air or water.
Explanatory Note
Includes, in particular:
• motors and engines for land vehicles;
• couplings and transmission components for land vehicles;
• air cushion vehicles.
Does not include, in particular:
• certain parts of vehicles (consult the Alphabetical List of Goods);
• railway material of metal (Cl. 06);
• motors, engines, couplings and transmission components other than for land vehicles (Cl. 07);
• parts of motors and engines (of all kinds) (Cl. 07).
CLASS 13
(Firearms)
Firearms; ammunition and projectiles; explosives; fireworks.
Explanatory Note
This class includes mainly firearms and pyrotechnical products.
Does not include, in particular:
• matches (Cl. 34).
CLASS 14
(Jewelry)
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.
Explanatory Note
This class includes mainly precious metals, goods in precious metals and, in general, jewelry, clocks and watches.
Includes, in particular:
• jewelry (i.e. imitation jewelry and jewelry of precious metal and stones);
• cuff links, tie pins.
Does not include, in particular:
• certain goods in precious metals (classified according to their function or purpose), for example:
- metals in foil and powder form for painters, decorators, printers and artists (Cl. 02);
- amalgam of gold for dentists (Cl. 05);
- cutlery (Cl. 08);
- electric contacts (Cl. 09);
- pen nibs of gold (Cl. 16);
• objects of art not in precious metals (classified according to the material of which they consist).
CLASS 15
(Musical Instruments)
Musical instruments.
Explanatory Note
Includes, in particular:
• mechanical pianos and their accessories;
• musical boxes;
• electrical and electronical musical instruments.
Does not include, in particular:
• apparatus for the recording, transmission, amplification and reproduction of sound (Cl. 09).
CLASS 16
(Paper goods and printed matter)
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.
Explanatory Note
This class includes mainly paper, goods made from that material and office requisites.
Includes, in particular:
• paper knives;
• duplicators;
• plastic sheets, sacks and bags for wrapping and packaging.
Does not include, in particular:
• certain goods made of paper and cardboard (consult the Alphabetical List of Goods);
• colours (Cl. 02);
• hand tools for artists (for example: spatulas, sculptors' chisels) (Cl. 08).
CLASS 17
(Rubber goods)
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Explanatory Note
This class includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.
Includes, in particular:
• rubber material for recapping tyres;
• padding and stuffing materials of rubber or plastics;
• floating anti-pollution barriers.
CLASS 18
(Leather goods)
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Explanatory Note
This class includes mainly leather, leather imitations, travel goods not included in other classes and saddlery.
Does not include, in particular:
• clothing, footwear, headgear (consult the Alphabetical List of Goods).
CLASS 19
(Nonmetallic building materials)
Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
Explanatory Note
This class includes mainly nonmetallic building materials.
Includes, in particular:
• semi-worked woods (for example: beams, planks, panels);
• veneers;
• building glass (for example: floor slabs, glass tiles);
• glass granules for marking out roads;
• letter boxes of masonry.
Does not include, in particular:
• cement preservatives and cement-waterproofing preparations (Cl. 01);
• fireproofing preparations (Cl. 01).
CLASS 20
(Furniture and articles not otherwise classified)
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Explanatory Note
This class includes mainly furniture and its parts and plastic goods, not included in other classes.
Includes, in particular:
• metal furniture and furniture for camping;
• bedding (for example: mattresses, spring mattresses, pillows);
• looking glasses and furnishing or toilet mirrors;
• registration number plates not of metal;
• letter boxes not of metal or masonry.
Does not include, in particular:
• certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);
• special furniture for laboratories (Cl. 09);
• special furniture for medical use (Cl. 10);
• bedding linen (Cl. 24);
• eiderdowns (Cl. 24).
CLASS 21
(Housewares and glass)
Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Explanatory Note
This class includes mainly small, hand-operated, utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.
Includes, in particular:
• utensils and containers for household and kitchen use, for example: kitchen utensils, pails, and pans of iron, aluminum, plastics and other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.;
• candle extinguishers, not of precious metal;
• electric combs;
• electric toothbrushes;
• dish stands and decanter stands.
Does not include, in particular:
• certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods);
• cleaning preparations, soaps, etc. (Cl. 03);
• small apparatus for mincing, grinding, pressing, etc., driven by electricity (Cl. 07);
• razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 08);
• cooking utensils, electric (Cl. 11);
• toilet mirrors (Cl. 20).
CLASS 22
(Cordage and fibers)
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Explanatory Note
This class includes mainly rope and sail manufacture products, padding and stuffing materials and raw fibrous textile materials.
Includes, in particular:
• cords and twines in natural or artificial textile fibres, paper or plastics.
Does not include, in particular:
• certain nets, sacs and bags (consult the Alphabetical List of Goods);
• strings for musical instruments (Cl. 15).
CLASS 23
(Yarns and threads)
Yarns and threads, for textile use.
CLASS 24
(Fabrics)
Textiles and textile goods, not included in other classes; bed and table covers.
Explanatory Note
This class includes mainly textiles (piece goods) and textile covers for household use.
Includes, in particular:
• bedding linen of paper.
Does not include, in particular:
• certain special textiles (consult the Alphabetical List of Goods);
• electrically heated blankets (Cl. 10);
• table linen of paper (Cl. 16);
• horse blankets (Cl. 18).
CLASS 25
(Clothing)
Clothing, footwear, headgear.
Explanatory Note
Does not include, in particular:
• certain clothing and footwear for special use (consult the Alphabetical List of Goods).
CLASS 26
(Fancy goods)
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Explanatory Note
This class includes mainly dressmakers' articles.
Includes, in particular:
• slide fasteners.
Does not include, in particular:
• certain special types of hooks (consult the Alphabetical List of Goods);
• certain special types of needles (consult the Alphabetical List of Goods);
• yarns and threads for textile use (Cl. 23).
CLASS 27
(Floor coverings)
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (nontextile).
Explanatory Note
This class includes mainly products intended to be added as furnishings to previously constructed floors and walls.
CLASS 28
(Toys and sporting goods)
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Explanatory Note
Includes, in particular:
• fishing tackle;
• equipment for various sports and games.
Does not include, in particular:
• Christmas tree candles (Cl. 04);
• diving equipment (Cl. 09);
• amusement apparatus adapted for use with television receivers only (Cl. 09);
• electrical lamps (garlands) for Christmas trees (Cl. 11);
• fishing nets (Cl. 22);
• clothing for gymnastics and sports (Cl. 25);
• confectionery and chocolate decorations for Christmas trees (Cl. 30).
CLASS 29
(Meats and processed foods)
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Explanatory Note
This class includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.
Includes, in particular:
• milk beverages (milk predominating).
Does not include, in particular:
• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
• baby food (Cl. 05);
• dietetic substances adapted for medical use (Cl. 05);
• salad dressings (Cl. 30);
• fertilised eggs for hatching (Cl. 31);
• foodstuffs for animals (Cl. 31);
• living animals (Cl. 31).
CLASS 30
(Staple foods)
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Explanatory Note
This class includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food.
Includes, in particular:
• beverages with coffee, cocoa or chocolate base;
• cereals prepared for human consumption (for example: oat flakes and those made of other cereals).
Does not include, in particular:
• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
• salt for preserving other than for foodstuffs (Cl. 01);
• medicinal teas and dietetic substances adapted for medical use (Cl. 05);
• baby food (Cl. 05);
• raw cereals (Cl. 31);
• foodstuffs for animals (Cl. 31).
CLASS 31
(Natural agricultural products)
Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Explanatory Note
This class includes mainly land products not having been subjected to any form of preparation for consumption, living animals and plants as well as foodstuffs for animals.
Includes, in particular:
• raw woods;
• raw cereals;
• fertilized eggs for hatching;
• mollusca and crustacea (live).
Does not include, in particular:
• cultures of micro-organisms and leeches for medical purposes (Cl. 05);
• semi-worked woods (Cl. 19);
• artificial fishing bait (Cl. 28);
• rice (Cl. 30);
• tobacco (Cl. 34).
CLASS 32
(Light beverages)
Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Explanatory Note
This class includes mainly nonalcoholic beverages, as well as beer.
Includes, in particular:
• de-alcoholised drinks.
Does not include, in particular:
• beverages for medical purposes (Cl. 05);
• milk beverages (milk predominating) (Cl. 29);
• beverages with coffee, cocoa or chocolate base (Cl. 30).
CLASS 33
(Wine and spirits)
Alcoholic beverages (except beers).
Explanatory Note
Does not include, in particular:
• medicinal drinks (Cl. 05);
• de-alcoholised drinks (Cl. 32).
CLASS 34
(Smokers' articles)
Tobacco; smokers' articles; matches.
Explanatory Note
Includes, in particular:
• tobacco substitutes (not for medical purposes).
Does not include, in particular:
• cigarettes without tobacco, for medical purposes (Cl. 05);
• certain smokers' articles in precious metal (Cl. 14) (consult the Alphabetical List of Goods).
SERVICES
CLASS 35
(Advertising and business)
Advertising; business management; business administration; office functions.
Explanatory Note
This class includes mainly services rendered by persons or organizations principally with the object of:
(1) help in the working or management of a commercial undertaking, or
(2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
Includes, in particular:
• services consisting of the registration, transcription, composition, compilation, or systematization of written communications and registrations, and also the exploitation or compilation of mathematical or statistical data;
• services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio;
• the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.
Does not include, in particular:
• activity of an enterprise the primary function of which is the sale of goods, i.e., of a so-called commercial enterprise;
• services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise (consult the Alphabetical List of Services).
CLASS 36
(Insurance and financial)
Insurance; financial affairs; monetary affairs; real estate affairs.
Explanatory Note
This class includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.
Includes, in particular:
• services relating to financial or monetary affairs comprise the following:
(a) services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;
(b) services of credit institutions other than banks such as cooperative credit associations, individual financial companies, lenders, etc.;
(c) services of "investment trusts," of holding companies;
(d) services of brokers dealing in shares and property;
(e) services connected with monetary affairs vouched for by trustees;
(f) services rendered in connection with the issue of travellers' cheques and letters of credit;
• services of realty administrators of buildings, i.e., services of letting or valuation, or financing;
• services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.
CLASS 37
(Building construction and repair)
Building construction; repair; installation services.
Explanatory Note
This class includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.
Includes, in particular:
• services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;
• services auxiliary to construction services like inspections of construction plans;
• services of shipbuilding;
• services consisting of hiring of tools or building materials;
• repair services, i.e., services which undertake to put any object into good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);
• various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;
• services of maintenance for preserving an object in its original condition without changing any of its properties (for the difference between this class and Class 40 see the explanatory note of Class 40).
Does not include, in particular:
• services consisting of storage of goods such as clothes or vehicles (Cl. 39);
• services connected with dyeing of cloth or clothes (Cl. 40).
CLASS 38
(Telecommunications)
Telecommunications.
Explanatory Note
This class includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which:
(1) allow a person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with another (radio and television).
Includes, in particular:
• services which consist essentially of the diffusion of radio or television programmes.
Does not include, in particular:
• radio advertising services (Cl. 35).
CLASS 39
(Transportation and storage)
Transport; packaging and storage of goods; travel arrangement.
Explanatory Note
This class includes mainly services rendered in transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.
Includes, in particular:
• services rendered by companies exploiting stations, bridges, rail-road ferries, etc., used by the transporter;
• services connected with the hiring of transport vehicles;
• services connected with maritime tugs, unloading, the functioning of ports and docks and the salvaging of wrecked ships and their cargoes;
• services connected with the functioning of airports;
• services connected with the packaging and parcelling of goods before dispatch;
• services consisting of information about journeys or the transport of goods by brokers and tourist agencies, information relating to tariffs, timetables and methods of transport;
• services relating to the inspection of vehicles or goods before transport.
Does not include, in particular:
• services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio (Cl. 35);
• services relating to the issuing of travellers' cheques or letters of credit by brokers or travel agents (Cl. 36);
• services relating to insurances (commercial, fire or life) during the transport of persons or goods (Cl. 36);
• services rendered by the maintenance and repair of vehicles, nor the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37);
• services relating to reservation of rooms in a hotel by travel agents or brokers (Cl. 43).
CLASS 40
(Treatment of materials)
Treatment of materials.
Explanatory Note
This class includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.
For the purposes of classification, the mark is considered a service mark only in cases where processing or transformation is effected for the account of another person. A mark is considered a trade mark in all cases where the substance or object is marketed by the person who processed or transformed it.
Includes, in particular:
• services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment); consequently, a maintenance service, although usually in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers);
• services of material treatment which may be present during the production of any substance or object other than a building; for example, services which involve cutting, shaping, polishing by abrasion or metal coating.
Does not include, in particular:
• repair services (Cl. 37).
CLASS 41
(Education and entertainment)
Education; providing of training; entertainment; sporting and cultural activities.
Explanatory Note
This class contains mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.
Includes, in particular:
• services consisting of all forms of education of persons or training of animals;
• services having the basic aim of the entertainment, amusement or recreation of people;
• Presentation of works of visual art or literature to the public for cultural or educational purposes.
CLASS 42
(Computer, scientific & legal)
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
Explanatory Note
Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc.
Includes, in particular:
• the services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields;
• scientific research services for medical purposes.
Does not include, in particular:
• business research and evaluations (Cl. 35);
• word processing and computer file management services (Cl. 35);
• financial and fiscal evaluations (Cl. 36);
• mining and oil extraction (Cl. 37);
• computer (hardware) installation and repair services (Cl. 37);
• services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Cl. 44);
• medical treatment services (Cl. 44);
• garden design (Cl. 44).
CLASS 43
(Hotels and restaurants)
Services for providing food and drink; temporary accommodations.
Explanatory Note
Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodations.
Includes, in particular:
• reservation services for travellers' accommodations, particularly through travel agencies or brokers;
• boarding for animals.
Does not include, in particular:
• rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);
• arranging travel by tourist agencies (Cl. 39);
• preservation services for food and drink (Cl. 40);
• discotheque services (Cl. 41);
• boarding schools (Cl. 41);
• rest and convalescent homes (Cl. 44).
CLASS 44
(Medical, beauty & agricultural)
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Explanatory Note
Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.
Includes, in particular:
• medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);
• artificial insemination services;
• pharmacy advice;
• animal breeding;
• services relating to the growing of plants such as gardening;
• services relating to floral art such as floral compositions as well as garden design.
Does not include, in particular:
• vermin extermination (other than for agriculture, horticulture and forestry) (Cl. 37);
• installation and repair services for irrigation systems (Cl. 37);
• ambulance transport (Cl. 39);
• animal slaughtering services and taxidermy (Cl. 40);
• timber felling and processing (Cl. 40);
• animal training services (Cl. 41);
• health clubs for physical exercise (Cl. 41);
• scientific research services for medical purposes (Cl. 42);
• boarding for animals (Cl. 43);
• retirement homes (Cl. 43).
CLASS 45
(Personal)
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
Explanatory Note
Includes, in particular:
• investigation and surveillance services relating to the safety of persons and entities;
• services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.
Does not include, in particular:
• professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);
• services relating to financial or monetary affairs and services dealing with insurance (Cl. 36);
• escorting of travellers (Cl. 39);
• security transport (Cl. 39);
• services consisting of all forms of education of persons (Cl. 41);
• performances of singers and dancers (Cl. 41);
• legal services (Cl. 42);
• services provided by others to give medical, hygienic or beauty care for human beings or animals (Cl. 44);
• certain rental services (consult the Alphabetical List of Services and General Remarks relating to the classification of services).
The United States Patent and Trademark Office associates the following word titles with the respective international trademark class numbers:
GOODS
1. Chemicals
2. Paints
3. Cosmetics and cleaning preparations
4. Lubricants and fuels
5. Pharmaceuticals
6. Metal goods
7. Machinery
8. Hand tools
9. Electrical and scientific apparatus
10. Medical apparatus
11. Environmental control apparatus
12. Vehicles
13. Firearms
14. Jewelry
15. Musical instruments
16. Paper goods and printed matter
17. Rubber goods
18. Leather goods
19. Non-metallic building materials
20. Furniture and articles not otherwise classified
21. Housewares and glass
22. Cordage and fibers
23. Yarns and threads
24. Fabrics
25. Clothing
26. Fancy goods
27. Floor coverings
28. Toys and sporting goods
29. Meats and processed foods
30. Staple foods
31. Natural agricultural products
32. Light beverages
33. Wines and spirits
34. Smokers' articles
SERVICES
35. Advertising and business
36. Insurance and financial
37. Building construction and repair
38. Telecommunications
39. Transportation and storage
40. Treatment of materials
41. Education and entertainment
42. Computer, scientific and legal
43. Hotels and restaurants
44. Medical, beauty and agricultural
45. Personal
These short titles are not an official part of the international classification. Their purpose is to provide a means to quickly identify the general content of numbered international classes. By their nature, these titles will not necessarily disclose the classification of specific items. The titles are not designed to be used for classification but only as information to assist in the identification of numbered classes. To determine the classification of particular goods and services, it is necessary to refer to the Alphabetical List of Goods and Services, the class headings of international classes and Explanatory Notes in the International Classification of Goods and Services for the Purposes of the Registration of Marks (8th ed. 2002), published by WIPO. The full names of international classes are set forth in 37 C.F.R. §6.1.
The short titles are printed in the Official Gazette in association with the international class numbers under MARKS PUBLISHED FOR OPPOSITION, Sections 1 and 2; TRADEMARK REGISTRATIONS ISSUED, PRINCIPAL REGISTER, Section 1; TRADEMARK REGISTRATIONS ISSUED UNDER SECTION 1(d), Sections 1 and 2; and SUPPLEMENTAL REGISTER, Sections 1 and 2.
The international trademark classification was adopted by the United States as its system of classification as of September 1, 1973. See 911 TMOG 210 (June 26, 1973). The use of short titles was announced in a notice at 924 TMOG 155 (July 16, 1974).
Additional general guidance concerning identifications may be found in the "Alphabetical List" of goods and services appearing in the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement-Part I (8th ed. 2002), published by the World Intellectual Property Organization, 34, chemin des Colombettes, 1211 Geneva 20 Switzerland. (Specify the English edition when ordering.) The International Classification is available at http://www.wipo.int/classifications/en/index.html. However, because the international list was developed to classify goods and services and not to identify specific goods and services, most entries will not be sufficiently definite to use in an identification of goods or services.
The Acceptable Identification of Goods and Services Manual should be used to determine whether an identification is sufficiently definite. See
TMEP §1402.04.
In an application for registration of a mark, the applicant or the applicant's attorney should designate the international class number(s) that are appropriate for the identified goods or services whenever the information is known. 37 C.F.R. §2.32(a)(7). See
TMEP §1401.02(a)
for the international classification schedule with explanatory notes.
In an application under §1 or §44, incorrect classification will be corrected by amendment. See
TMEP §1401.03(b).
Sometimes a product could be classified in more than one class. Some products are classified differently depending on the type of material of which the product is composed. For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21. Generally, in applications under §1 or §44 of the Trademark Act, the Office will presume that the class number designated by the applicant or the applicant's attorney is correct in the absence of any contradictory information. The applicant may be asked for further clarification for classification of goods of this type during the examination of the application.
In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the Office will do so. If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are classified in a service class), the Pre-Examination Section of the Office will change the classification. The filing receipt for the application will indicate the class number(s) that have been designated.
Upon examination, the classification must be amended if the class numbers are incorrect. When the examining attorney requires or recommends an amendment of the identification of goods or services that would necessitate an amendment of the classification, the examining attorney should also require that the classification be amended.
If an incorrect class number was designated by the Pre-Examination Section, the examining attorney must inform the applicant of the correct class number for the identified goods or services and require amendment of the classification.
Amendment or correction of classification may be done through an examiner's amendment, without prior authorization by the applicant or the applicant's attorney. Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm'r Pats. 1999). See
TMEP §707.02.
Before approving an application for publication, the examining attorney should check to make sure that the properly assigned class is reflected in the electronic records of the Office.
The applicant should make an initial effort at classification, using the Alphabetical List of Goods and Services. In an application under §1 or §44 of the Trademark Act, when an application and fee is filed for a single class, but the identification lists a large number of items that obviously involve many classes, the examining attorney will require the applicant to properly classify the items. Class designations must be determined and fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes.
TMEP §810.01.
In an application under §66(a) of the Trademark Act, i.e., a request for protection of an international registration to the United States pursuant to the Madrid Protocol, the International Bureau of the World Intellectual Property Organization ("IB") controls classification. Article 3(2) of the Protocol. The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Therefore, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB's classification of goods/services in the §66(a) application is different from the classification set forth in the USPTO's Acceptable Identification of Goods and Services Manual.
Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B or 200. However, the applicant must comply with all other U.S. requirements for certification and collective membership marks, regardless of the classification chosen by the IB. See
TMEP §§1304
et seq. and
1306
et seq.
For purposes of identification of goods/services, the examining attorney will examine a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO's Manual of Acceptable Identification of Goods and Services (see
TMEP §1402.04)
whenever possible.
See also
TMEP §§1402.01(c)
and
1902.07(c)(i).
Extract from 15 U.S.C. §1112. The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce: Provided, That if the Director by regulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for filing an application in each class shall be paid, and the Director may issue a single certificate of registration for such mark.
Classification is the basis for determining the number of fees that must be paid. In an application under §1 or §44 of the Trademark Act, fee is required for each class.
In an application under §1 or §44, if the application sets forth goods or services in more than one class and only one fee has been paid, the applicant must either amend the application to restrict the goods or services to a single class or submit a fee for each additional class to prosecute the application as a multiple-class application. The fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes.
TMEP §810.01.
If, with the original application, the applicant submits fees for more classes than are validly represented in the application, the fees that have been overpaid in error will be refunded.
In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO pursuant to the provisions of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (April 1, 2004) ("Common Regs."). The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See
TMEP §1401.03(d)
for further information.
Prior to the adoption of the International Classification in 1973, the U.S. Classification was the primary classification used in the Office. After adoption of the International Classification, the U.S. Classification became a secondary classification system. United States classes are still assigned to all applications by a computerized system. Each international class is coordinated with the U.S. classes that are most frequently associated with it. Neither examining attorneys nor any other Office personnel have the authority or capability of altering these automatically assigned secondary U.S. Classification designations.
An application may list, in connection with each international class number designated, only goods or services that fall within that class. An applicant may apply to register a mark for any or all of the goods/services on or in connection with which the applicant is using or has a bona fide intent to use the mark in commerce, if the applicant submits a filing fee for each class. See 15 U.S.C. §1112; 37 C.F.R. §2.86(a). An application that includes more than one class of goods or services is called a combined or multiple class application. See
TMEP §§1403
et seq.
The applicant should designate only the number of classes for which a filing fee is submitted and should limit the specified goods and services to those within the particular class(es) designated. Thus, if a single filing fee is submitted, the applicant should designate only one class and should limit the goods or services specified in the identification to items in that class.
The examining attorney must require any necessary amendments to ensure that the classification is correct for the specified goods or services. In an application under §1 or §44 of the Trademark Act, if the applicant identifies goods or services that are classified in a greater number of classes than the classes for which filing fees have been paid, the examining attorney must require that the applicant either: (1) pay the additional fees; or (2) amend the identification to restrict the application to the number of classes for which fees have already been paid. See
TMEP §§810.01
and
1403.02(c).
In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO, pursuant to the provisions of the Madrid Protocol and the Common Regs. The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See
TMEP §1401.03(d).
The Alphabetical List of Goods and Services according to the International Classes contains information about the appropriate class for particular products and services. See
TMEP §1401.02(c).
See also the Explanatory Notes at the end of each class heading of goods or services.
TMEP §1401.02(a).
These notes explain the principles and differentiating lines on which the international classes are based.
Some general criteria have been formulated for placing goods or services in the international classes:
• Finished products are classified, in principle, according to their function or purpose or the industry that produces them or, secondarily, according to the material of which they are made or the trade in which they are sold.
• Finished products that are multipurpose composite objects (e.g., clocks incorporating radios) may be classified in all the classes that correspond to each of their functions or intended purposes.
• Raw materials, unworked or semi-worked, are classified, in principle, according to the material of which they consist.
• Goods intended to form part of another product are, in principle, only classified in the same class as the end product if they cannot also be used for other purposes. When the goods can be used for other purposes in general manufacture, the same criterion as for finished products (above) applies.
• Goods, whether finished or not, are classified according to the material of which they are made and where they are made of different materials, such goods are classified, in principle, according to the material that predominates.
• Cases adapted to the product they are intended to contain are classified, in principle, in the same class as the product.
• Services are classified, in principle, according to the branches of activity specified in the headings of the service classes and their Explanatory Notes or, subsidiarily, by analogy with other comparable services contained in the Alphabetical List.
• Rental services are classified, in principle, in the same classes as the services provided by means of the rented objects (e.g., rental of telephones, in Class 38).
• Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy in Class 39, business management consultancy in Class 35, financial consultancy in Class 36, beauty consultancy in Class 44. The rendering of the advice, information or consultancy by electronic means (such as telephone or computer) does not affect the classification of these services. See
TMEP §1402.11(b)
and
(e)
.
See
TMEP §1401.02(a).
As indicated above, in the international classification, considerable weight is given to the material of which goods are made.
A product may comprise items that are sold as a unit and that, if sold separately, would be classified in different classes. The identification in such cases should include wording to indicate that the goods are "sold as a unit." The predominant elements should be listed first and the item will be classified accordingly.
Example - Computer software is classified in Class 9. Instructional manuals are classified in Class 16. The item "Computer software in the field of investment management and instructional manuals related thereto, sold as a unit" would be classified in Class 9. "Instructional manuals in the field of investment management and computer software relating thereto, sold as a unit" would be classified in Class 16.
As a general rule, the specimen(s) in an application under §1 of the Trademark Act helps to determine the correct classification. The examining attorney should carefully review the specimen to ensure that the identification and classification are accurate. If the information in the record and the wording of the identification differ, or if some significant characteristic shown in the record is omitted from the identification, the assigned class number may be incorrect. See
TMEP §1402.05.
However, the examining attorney must remember that, generally, the specimen need only support use of the mark on one item in each class of goods or services set forth in an application. See
TMEP §904.01(a).
The classification of goods could be affected if the specimen shows that the mark identifies a composition, an ingredient or a part that exists in the market only as a component of another product, and the identification does not reveal that the item exists only as a component of a specified product.
If the specimen indicates that the goods are promoted for industrial use only, this should be reflected in the identification when it affects the designation of the correct class. For example, detergents for use in industrial and manufacturing processes are classified in Class 1, not in Class 3 where other detergents are classified.
If the specimen shows that the mark identifies a structural part of a machine, this should be reflected in the identification, because parts for machines are generally classified with the machine if the part has no applicability elsewhere.
If the mark is used or intended to be used on raw materials such as plastics or resins which may be marketed in a variety of forms (such as sheets, powders or solutions, or as materials that may be either natural or synthetic), these facts should be indicated in the identification of the goods. This is important because some raw materials are classified in several international classes; for example, plastic in sheet form is in a different class from plastic in powder or pellet form, and synthetic materials are in a different class from those that are natural. Usually, a specimen will disclose these characteristics of raw materials.
If the specimen indicates that a product is made of a particular material, the identification should specify the material, because many finished products are classified on the basis of the material composition of the article. Generally, if there is a classification dedicated to a particular type of goods, the material composition for those goods does not have to be indicated in the identification. For example, Class 20 is the proper class for furniture. This is true regardless of whether the furniture is made of metal. Metal furniture is not classified in Class 6 with other metal products because there is an acceptable class (Class 20) for all furniture regardless of material composition. On the other hand, there is no class specifically designated for ladders. Therefore, ladders are classified by material composition: metal ladders are in Class 6; wood or plastic ladders are in Class 20; and rope ladders are in Class 22.
The only exception to this general guideline is in the area of precious metal. Most items that are made of precious metal are classified in Class 14, even when there is another class in which those goods would be classified if they were made of any other material. For example, nut crackers are classified in Class 8 whether they are made of plastic, wood, nonprecious metal or any other material except precious metal. Nut crackers made of precious metal are in Class 14.
One product or service that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz, 87 USPQ 374 (Comm'r Pats. 1950). However, if it can be shown that a product or service has a plurality of uses or aspects so that two or more classes are indicated, multiple classification may be permissible. However, identical language cannot be used as the identification of goods in more than one class in these situations. The identification must clearly indicate the basis for multiple classification with language that is appropriate for the respective classes. In an application under §1 of the Trademark Act, the specimen(s) should reflect acceptable use of the mark for each of the specified classes or should be of a general utility nature. In the case of general utility specimens, there must be nothing in the record indicating only one use or aspect. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re International Salt Co., 166 USPQ 215 (TTAB 1970); Mead Johnson Co. v. Watson, 112 USPQ 284 (D.D.C. 1957), aff'd 253 F.2d 862, 117 USPQ 13 (D.C. Cir. 1958).
Where a single product or service is classified in more than one class, the applicant must file an acceptable specimen (or copy thereof) for each class with an application under §1(a) of the Act, or an amendment to allege use or statement of use in an application under §1(b). The applicant must also comply with all other requirements for multiple-class applications. See
TMEP §1403.01.
If an item is consistently classified in a particular class, the applicant cannot obtain registration in another class by adding language that indicates that other class.
Example - Essential oils are classified in Class 3. This item cannot be classified in Class 1 with an indication that it is used in the manufacture of other finished products. Raw or unfinished materials that are used in the manufacture of other finished products may be classified in Class 1. However, an item like essential oils, that is always classified in Class 3 regardless of its ultimate use, cannot be transferred to Class 1 by adding Class 1 qualifying language.
The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce. The entire contents of a class, as represented by the short title of the class, should not be recited as the identification of goods or services. The short titles of the classes indicate the general scope of the classes and are generally too broad and inclusive to be used to identify particular goods or services.
Effective January 1, 2002, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement") was amended to add three new service classes (43 through 45). These new classes arose from the extensive restructuring of Class 42. In the course of that restructuring, many activities were removed from Class 42 and placed in one of the three new classes.
The purpose of the Nice Classification is to group, as much as possible, like goods or services in a single class. Generally, the system is successful in achieving that purpose. However, over the years, it became apparent that Class 42 included many disparate services. This was due in large part to the inclusion of the language "services that cannot be classified in other classes" in the class heading for Class 42. This language allowed services as different as "chemical research" and "horoscope casting" to be included in the class. Therefore, after much study and discussion, the Committee of Experts for the Nice Agreement approved the restructuring of Class 42. The restructuring amended Class 42 by limiting the scope of the services included in that class to computer, scientific and legal services, and created three additional classes that grouped services previously classified in Class 42 into new classes that kept like services grouped together. See
TMEP §1401.02(a).
Effective January 1, 2002, the language "services that cannot be classified in other classes," which previously appeared in the class heading of Class 42, has been eliminated. See
TMEP §1401.09(a).
As previously noted, prior to January 1, 2002, the language "services that cannot be classified in other classes" appeared in the class heading of Class 42. Effective January 1, 2002, this language "services that cannot be classified in other classes" no longer appears in any of the class headings or explanatory notes of the Nice Agreement. The Committee of Experts found that the revision of the Nice Agreement created an adequate number of well-defined classes so that this language was no longer necessary. Services must now be identified with sufficient clarity and precision to allow for appropriate classification in one of the eleven service classes.
See
TMEP §§1402.11(a)
et seq. for further information about the changes in identification and classification of services.
The new requirements of the 8th edition of the Nice Agreement apply only to applications filed on or after January 1, 2002. In an application filed before January 1, 2002, the examining attorney may give the applicant the option of remaining in compliance with the 7th edition of the Nice Agreement or amending the application to comply with the classification requirements of the 8th edition. The applicant may, of its own accord, submit an amendment to its application that brings it into compliance with the 8th edition of the Nice Agreement.
A written application must specify the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). To "specify" means to name in an explicit manner. The identification of goods or services should set forth common names, using terminology that is generally understood. For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.
The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.
The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).
The accuracy of identification language in the original application is important because the identification cannot later be expanded. See 37 C.F.R. §2.71(a);
TMEP §§1402.06
and
1402.07
et seq.; In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991).
With few exceptions, an identification of goods and services will be considered acceptable if it:
• Is written in English;
• Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;
• Meets the standards (not necessarily the language) set forth in the Acceptable Identification of Goods and Services Manual;
• Is not a class heading; and
• Is in the correct class.
Deference should be given to the language and the classification set forth by the applicant in the original application. Obvious spelling errors in an identification of goods/services may be corrected by examiner's amendment without contacting the applicant. See
TMEP §707.02.
The identification of goods and services in an application based on §44 of the Trademark Act, 15 U.S.C. §1126, must comply with the same standards that govern other applications. The applicant must identify the goods and services specifically, to enable the Office to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).
Foreign registrations will often include broad statements of the identification of goods and services. In many cases the identification is merely a repetition of the entire general class heading for a given class. These broad identifications are generally unacceptable in United States applications. The identification of goods or services in the United States application must be definite and specific even if the foreign registration includes an overly broad identification. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Furthermore, in an application based on §44 of the Trademark Act, the identification of goods and services covered by the §44 basis in the United States application may not exceed the scope of the goods and services identified in the foreign registration. Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972). However, if the applicant also relies on use in commerce or intent-to-use in commerce, the identification of goods or services may include items or services not listed in the foreign registration if the applicant specifically limits the §44 basis to the goods and services covered by the foreign registration. 37 C.F.R. §2.32(a)(6). See
TMEP §§806.02
et seq. regarding multi-basis applications.
If a foreign registration in a single class includes a broad statement of the identification of goods or services and the Office determines that the goods or services identified are in more than one class, the applicant may rely on the same foreign registration to cover the additional classes in the United States application, provided the identification in the foreign registration encompasses all goods or services identified in the United States application. See
TMEP §§1403
et seq. regarding multiple class applications.
The examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the Manual of Acceptable Identification of Goods and Services whenever possible.
However, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB. See
TMEP §1401.03(d).
If the IB's classification of goods/services in the §66(a) application is different from the classification set forth in the Manual of Acceptable Identification of Goods and Services , the examining attorney will not request an amendment of the classification. The goods/services cannot be moved to another class identified in the application. See
TMEP §1904.02(b).
If the applicant submits a separate drawing page, this page is considered part of the written application and not a separate element. Any goods or services listed on the drawing will be considered part of the "identification of goods and services," even if these goods or services do not appear within the body of the application.
It is the applicant's duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules. The examining attorney should explain clearly but concisely the reason for requiring an amendment.
Under 37 C.F.R. §2.61(b), the examining attorney may require information and exhibits if necessary to ascertain the nature of the goods or services or otherwise permit proper examination. See
TMEP §814.
When requiring amendment to the identification of goods and services, the examining attorney should advise the applicant that goods or services deleted by amendment may not be reinserted at a later point in prosecution. See
TMEP §§1402.06(a)
and
1402.07(e).
Examining attorneys should take particular care to ensure that pro se applicants are aware of the restrictions on amendments to the identification of goods and services.
If an examining attorney is uncertain as to the acceptability of the language in an identification, he or she should consult with a senior or managing attorney. If still unresolved, questions about an identification of goods or services should be referred to the Administrator for Trademark Identifications, Classification and Practice.
The examining attorney has the discretion to issue a final refusal based on a requirement to amend the identification of goods or services. Examining attorneys should make every effort to resolve these issues, and should suggest an acceptable identification if possible. The appropriate senior or managing attorney must approve final action if the examining attorney does not have full signatory authority. The Administrator for Trademark Identifications, Classification and Practice should be consulted whenever necessary and copies of appeal briefs that involve an issue of identification of goods or services should be sent to the Administrator for monitoring purposes.
An application under §1 or §44 must include an identification of goods/services to receive a filing date. 37 C.F.R. §2.21(a)(4). If an application does not include an identification of recognizable goods or services, it will be denied a filing date.
Effective October 30, 1999, any goods or services listed on a drawing page are considered part of the "identification of goods and services."
If the application does not identify any recognizable goods or services, the Office will deny a filing date. For example, a filing date will be denied if the identification of goods or services is blank or recites only the following:
(1) the mark itself;
(2) a class number;
(3) wording such as "company name," "corporate name" or "company logo;"
(4) "Internet services" or "e-commerce services;"
(5) "advertising and business" (the short title of Class 35);
(6) "miscellaneous" or "miscellaneous services;" or
(7) "personal services" (the short title of Class 45).
These examples fail to meet even the minimum requirements necessary to receive a filing date under 37 C.F.R. §2.21(a)(4).
In an application under §1 or §44, if an examining attorney finds that the application materials fail to specify recognizable goods or services, the examining attorney should return the materials to the supervisory legal instruments examiner with instructions to cancel the filing date for failure to specify goods or services, under 37 C.F.R. §2.21(a)(4).
If the identification language includes wording that would not be sufficient and other wording that, by itself, would be specific enough to entitle the application to a filing date, the Office will grant the application a filing date. The Office will disregard wording that fails to include any scope limitations for the purpose of determining the scope of permissible amendments. For example, if the applicant uses "e-commerce services" along with definite language, the identification of services may only be amended to correct the identification within the scope of services indicated by the presence of the definite language. See
TMEP §§1402.07
et seq. regarding the scope of an identification for purposes of amendment.
Reference to the goods or services only on the specimen(s) does not satisfy the requirement for an "identification of goods or services."
The Office will not deny a filing date if the applicant uses the language of an international class heading or indicates that the mark is used on all goods or services in a certain class. However, the Office strongly discourages the use of the language of the international class headings or statements that the mark is used on all goods or services in a class to identify the goods or services for which registration of the mark is sought, and will require amendment of any such identification. Note also that an applicant is required to submit a verified statement specifying either that the applicant is using the mark in commerce or has a bona fide intention to use the mark in commerce on or in connection with the specified goods or services. It is unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class.
Applicants frequently use broad terms to identify the goods or services in an application. In applications based solely on §1(a), 15 U.S.C. §1051(a), the applicant must have used the mark in commerce on all of the goods or services as of the application filing date. See First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988). In applications filed under §1(b), 15 U.S.C. §1051(b), and §44, 15 U.S.C. §1126, the applicant must assert a bona fide intent to use the mark in commerce on the goods or services as of the application filing date. The requirement for use or a bona fide intent to use is not necessarily violated by broad identifying terms. When a mark is used on a number of items that make up a homogeneous group, a term that identifies the group as a whole would be understood as encompassing products of the same general type that are commercially related.
As long as a broad term identifies the goods or services that are intended to be covered with reasonable certainty, it will be reasonable, from a commercial viewpoint, to consider that the mark has been used for all the related goods or services that fall in the designated group. See In re Dynamit Nobel AG, 169 USPQ 499 (TTAB 1971) ("ammunition" permitted because its scope was assumed to be understood); In re Port Huron Sulphite & Paper Co., 120 USPQ 343 (TTAB 1959) ("paper other than board papers" approved because of evidence of actual use on various types of paper).
Where an applicant has identified its goods very broadly but does not use the mark on a substantial number of related goods encompassed by the identification language, the Office may require further specificity. For example, the Office generally requires that "paper" be identified with greater specificity, as many marks for paper are actually used on specific types of paper that may be classified in different classes and that have distinct channels of trade.
The examining attorney must consider the following guidelines:
(1) A term that clearly includes particular items that are classified in more than one class (e.g., "artists' materials") is not acceptable. Another example is "tables," which would include such diverse and differently classified types as operating tables, draftsmen's tables and dining tables. However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the commercial relationships between all the goods or services identified in the application. See
TMEP §1402.05(b)
regarding goods that may be classified in more than one class depending on their material composition.
(2) Some terminology is sufficient for purposes of according a filing date but too indefinite to enable proper examination to be made (e.g., "metallic parts"). For example, in In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349, 350 n. 4 (TTAB 1959), clarification of the term "beauty products" was held to be necessary because the term does not have a particular commercial meaning. In such a situation the examining attorney may seek further information under 37 C.F.R. §2.61(b). See
TMEP §814.
(3) An identification that can be understood when read in association with the title of the class in which it is placed, and that is otherwise satisfactory, should not be required to be further qualified by amendment. For example, "mufflers" in the clothing class would not require further modification to indicate that articles of clothing are intended; similarly, the term "house organ" in the class for printed publications would not need further qualification. The limited number of items to which this applies, however, represents a narrow exception to the general rule that an identification must itself provide a clear indication of the nature of the goods or services. See
TMEP §§1402.01
and
1402.05(b).
However, the title of a class cannot be used to define the nature of the goods when the same item could be classified in more than one class depending on material composition or field of use. For example, tools are classified in Class 7 if they are power-driven or Class 8 if they are not power-driven. The identification must indicate whether the tools should be classified in Class 7 or 8 (powered or non-powered). In this situation, the class title cannot be used to justify the appropriate classification.
(4) The common understanding of words or phrases used in an identification determine the scope and nature of the goods or services. A basic and widely-available dictionary should be consulted to determine the definition or understanding of a commonly used word.
(5) Many goods are commonly understood to move in a particular channel of trade or have particular attributes. When those goods are classified in the class that is appropriate for that common understanding, very often no further specification as to the nature of those goods is necessary. However, when the goods have a special use or attributes that are not typically associated with those particular goods that would cause it to be classified in a different class, that use or attribute should be indicated in the identification in order to justify the classification. For example, "skin lotion" usually refers to a cosmetic product - one that is not medicated. For that reason, it can be classified in Class 3 without further specification. However, a skin lotion that is medicated should be classified in Class 5, and the identification should indicate that the product is medicated in order to justify its classification in Class 5 rather than in the more commonly understood and assigned Class 3.
With broad identifications, as with any identification that includes more than one item, there is a question as to the amount of proof (normally by way of specimens) that is necessary to assure the examining attorney that the mark has been used on "all" the items in the application. See
TMEP §904.01(a).
The Office does not require specimens showing use of the mark for every item set forth in an application. However, if an identification is so broad that it encompasses a wide range of products, the applicant must submit evidence that it actually uses the mark on a wide range of products to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976). See
TMEP §1402.05
regarding accuracy of the identification.
The examining attorney should consider the degree of commercial relationship between the products; the fact that the applicant has claimed use of the mark, or an intention to use the mark, in regard to all goods specified in the application; and the fact that the applicant has stated that the facts set forth in the application are true. For a closely related group, a specimen showing use of the mark on one item of the group is sufficient. As the closeness of the relationship becomes less certain, specimens of use on more than one item might be necessary to show generalized use. The nature of the mark may also be considered. "House" marks are placed on all the goods that a company produces, whereas a "product" mark that is appropriate only for a specific commodity is used only on that commodity. See
TMEP §1402.03(b)
regarding house marks, and
TMEP §1402.03(c)
regarding identifications that refer to "a full line of" a genre of products.
The appropriateness of any broad identification depends on the facts in the particular case. The examining attorney should permit applicants to adopt terms that are as broad as the circumstances justify.
The identification should state common names for goods or services, be as complete and specific as possible and avoid indefinite words and phrases. The terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable.
The terms "namely" and "consisting of" are definite and are preferred whenever setting forth an identification that requires greater particularity. Vague terminology should be replaced by "namely" and "consisting of" whenever possible.
In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, "fabric suitable for making coats, suits, and the like." See Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).
"Parts therefor," as related to machinery, is acceptable when it follows a definite identification. "Accessories therefor" is usually considered indefinite but it has been allowed in some cases, particularly in the toy field. Identifications such as "dolls and accessories therefor" and "toy vehicles and accessories therefor" are acceptable because all goods that fall within that broad designation would be classified in Class 28 with the dolls or toy vehicles and could be the basis for a refusal of registration under 15 U.S.C. §1052(d). However, this phrase should only be used in a situation where it is clear that the goods encompassed by the phrase relate closely to the primary goods and would all be classified in the same class as the primary goods.
House marks refer to marks that are used by an entity on a wide range of goods. Marks of this type are often used in the chemical, pharmaceutical and food fields. A house mark is different from a product mark that is used on a specific item or closely related items. A product may bear both a product mark and a house mark.
Under certain limited circumstances, an applicant may apply to register a mark as a house mark. In an application for registration of a house mark, the identification of goods may include wording such as "a house mark for...." As with other applications, these applications must define the type of goods with sufficient particularity to permit proper classification and to enable the Office to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).
In an application to register a mark as a house mark based on use in commerce, the applicant must demonstrate that the mark is, in fact, used as a house mark. The examining attorney should require that the applicant provide catalogues showing broad use of the mark or similar evidence to substantiate this claim.
An intent-to-use applicant who wishes to register a mark as a house mark must clearly indicate its intention to register the mark as a house mark during initial examination, and the circumstances must establish that the applicant's proposed use of the mark as a house mark is credible. The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used as a house mark is credible. If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the amendment to allege use or statement of use, the applicant will be required to provide evidence to substantiate use as a house mark. If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.
The USPTO will register a mark as a house mark only in the limited circumstances where the mark is actually used as a house mark. Therefore, if an applicant seeks to register a house mark in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence that the mark is in fact used as a house mark. This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a house mark. 37 C.F.R. §2.61(b). If the applicant cannot do so, the identification of goods must be amend
